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On December 22nd the Court of Appeals for the Federal Circuit issued its sua sponte en banc In re Tam decision regarding the constitutionality of the “disparaging” marks bar under Section 2(a) of the Lanham Act. A Federal Circuit panel previously upheld a Trademark Trial and Appeal Board (the TTAB) decision affirming the refusal under the disparaging marks provision of Section 2(a) of a trademark application for the mark “THE SLANTS.” Would a “substantial composite” of Asians find the phrase THE SLANTS disparaging? The answer was “yes”, as detailed in our earlier blog posting on this case. Judge Moore, writing for the Federal Circuit panel in initially affirming the appeal decision, however, raised the question as to whether the court should consider the constitutionality issues about the registration standard raised by Mr. Tam on an en banc basis. Her peers agreed to do so.

Under the precedent of In re McGinley, 660 F.2d 481 (CCPA 1981), an applicant was precluded from arguing that Section 2(a) is unconstitutional under the rationale that because no commercial use of the mark is suppressed by the refusal, no speech is curtailed. The McGinley standard underpinned the TTAB decision and the Federal Circuit’s initial panel’s affirming decision.

The government argued that the challenged provision is viewpoint neutral because it restricts certain words but not messages. Further, the government argued that in any event the “speech” inherent in the registration of a mark is government or commercial speech, and not expressive speech untitled to a higher degree of constitutional scrutiny. The en banc Federal Circuit rejected these arguments, instead agreeing with Mr. Tam that trademarks are more than mere commercial assets and convey expressive messages that merit full speech protection. Even though denial of registration does not prevent “real world” commercial use of a mark, the court concluded that the benefits of registration are sufficiently important that viewpoint-based registration refusals have the practical effect of restricting speech.

In so ruling, this en banc decision expressly overturned McGinley. The court ruled that the disparagement provision of Section 2(a) cited as the basis for refusing the THE SLANTS application amounts to unconstitutional viewpoint discrimination.

Judge Moore, writing for the majority, notes that “[e]ven when speech ‘inflict[s] great pain,’ our Constitution protects it ‘to ensure that we do not stifle public debate.’” Citing Snyder v. Phelps, 562 U.S. 443.